In India, it is common to come across entrepreneurs & innovators who wait to launch their innovative product in the market before considering options to patent their product. But, I recently came across an even more interesting case wherein one of the companies known to me doing very well in the field of Rural Energy products & solutions, approached me for help. This company has a flagship product selling like hot cakes across rural markets in India due to an innovation in the product providing more fuel efficiency and hence lower cost to the customer. The company had acquired the innovation from an individual innovator for which a contract was signed and compensation duly paid.
The innovator had applied for a patent at that stage which was eventually granted. But the problem was that the patent related correspondences went to the innovator’s home and the company did not follow-up on the patent on it’s own accord nor did it get it assigned in the company’s name and also did not pay renewal fees which led to lapsing of the patent.
The innovator from whom the technology & patent was acquired passed away in the meanwhile. Their main worry was that their competitor can copy their technology and more importantly, their investors on board are not comfortable with a situation where they have invested in a innovative company without any Intellectual Property portfolio thus making them vulnerable and lowering valuation of the company.
Another issue to be tackled was that since the company was growing, it required to outsource production to 3rd party vendors and it needed Intellectual Property to ensure no copying took place.
At this stage, my company probed the company officials and investigated matters to find out the following: –
The patent which the company had acquired from the now deceased Innovator had ceased due to non payment of renewal fees
The company had not protected the brand under which it is selling the product nor the company name as Trademarks
There was no written legal contracts in place between the company & the 3rd party vendors
On realising the same, the following solution was suggested to the company which has now been implemented: –
Help the company think through new innovations in the product as part of New Product Development (NPD)
File a provisional patent for the new innovations envisaged in the product
File for trademarks for the brand name under which the product is being sold as also the name of the company under which it is doing business
Draft a legal contract (in partnership with our Legal Associates) incorporating adherence to the Intellectual Property of the company, non negotiables such as compliance with Law of the Land, no employment of Child Labour etc. and best practices such as having Toilet facility for workers etc.
A document explaining the rationale of ‘Patenting & protecting Intellectual Property’ to the company’s stake holders especially Investors
One of the interesting points made by the Company was that their vendors & other associates are either illiterate or semi literate so it is best to use a lot of visuals in communication with them. Keeping the above in mind, one of the suggestions which is also being incorporated by the company is making certificates of the Patent & Trademark applications and framing it in their offices as also the Workshops of the 3rd party vendors.
The key learning’s from this case study are as follows: –
Always, always properly document important work & action
Follow-up and complete the task at hand. Had the company chosen to get the patent assigned in it’s name, a lot of hardships could have been prevented
As the company starts growing and attracting Investor community, it should start protecting / legalising key business assets such as Brand Name, Technology, Partnerships etc. ( as illustrated with Trademark protection & Legal contracts with 3rd party vendors)
Communicate to the stake holders in a manner in which they can relate to the same & appreciate your efforts (as illustrated with the Certificate idea of the company)
Sell the concept in a simple but effective manner to the key stakeholders (that is the reason we created a document for the company’s investors: “Why Patenting” incorporating relevance of Patents even for Bottom of Pyramid (BOP) markets)
If required as in most cases, engage Professionals to do the job
As for Professionals engaged in Intellectual Property or Technology commercialisation business, it is important to understand the business case & offer appropriate “business solutions” and not just ‘legal opinion’